In 2022, the Patent Trial and Appeal Board (PTAB) did not issue any final written decisions involving design patents. However, it did issue three decisions granting review of challenged design patents and three decisions...more
2/23/2023
/ America Invents Act ,
Anticipation ,
Appeals ,
Design Patent ,
Final Written Decisions ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Software Patents
Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more
2/21/2023
/ Anticipation ,
Appeals ,
Article of Manufacture ,
Australia ,
Chile ,
China ,
Claim Construction ,
Damages ,
Design Patent ,
EU ,
Exclusion Orders ,
Final Written Decisions ,
Foreign Patent Applications ,
India ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Jury Verdicts ,
Likelihood of Success ,
Motion to Dismiss ,
Noninfringement ,
Obviousness ,
Patent Applications ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Registration ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Prior Art ,
Remedies ,
Reversal ,
Section 337 ,
Settlement Agreements ,
Summary Judgment ,
The Hague System ,
Trade Dress ,
United Arab Emirates (UAE) ,
USPTO
Following the successful release of the firm's inaugural year-in-review report last year, we will again be hosting a webinar featuring the highlights of our 2023 report. Webinar speakers will provide an overview and analysis...more
Thank you for reading the October 2022 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss an ongoing trademark suit involving a claim of irreparable harm, share the now open gTLD Sunrise periods,...more
10/28/2022
/ Andy Warhol Foundation for the Visual Arts Inc v Goldsmith ,
Cease and Desist ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Domain Name Registration ,
Domain Names ,
Fair Use ,
False Advertising ,
gTLD ,
ICANN ,
Intellectual Property Protection ,
Irreparable Harm ,
Lanham Act ,
Oral Argument ,
Preliminary Injunctions ,
Sunrise Periods ,
Trademark Litigation ,
Trademark Registration ,
Trademarks ,
Unfair or Deceptive Trade Practices ,
Websites
On Wednesday, October 12, 2022, at 10 a.m. EDT, the Supreme Court of the United States will hear oral arguments in The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 21-869. William H. Milliken, a director...more
From consumer products to graphical user interfaces to pharmaceuticals and medical devices, design patents have become essential tools in the IP toolkit for companies of all sizes. Not only are they relatively inexpensive and...more
Copyright owners now have another venue for enforcing copyrights: the Copyright Claims Board (CCB). Established by the Copyright Alternative in Small-Claims Enforcement Act of 2020 (CASE Act), the CCB aims to provide...more
6/23/2022
/ Actual Damages ,
Attorney's Fees ,
CASE Act ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Copyright Registration ,
Forum Selection ,
Intellectual Property Protection ,
Jurisdiction ,
Statutory Damages
[co-author: Ivy Attenborough, Summer Associate]
Thank you for reading the June 2022 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss the differences between Copyright Claims Board and federal...more
6/22/2022
/ Actual Damages ,
Attorney's Fees ,
CASE Act ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Copyright Registration ,
Email ,
Forum Selection ,
Intellectual Property Protection ,
Jurisdiction ,
Scams ,
Statutory Damages ,
Trademark Application ,
Trademark Registration ,
Trademarks ,
USPTO
In 1884, the Supreme Court upended the view that reproductions made by a machine could not qualify for copyright protection. The Court held that a “machine-made” image, meaning a photograph, titled Oscar Wilde, No. 18....more
Thank you for reading the March 2022 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss copyright registration eligibility in relation to non-human authorship and new legislation surrounding...more
3/30/2022
/ Artificial Intelligence ,
Authorship ,
Biopharmaceutical ,
Copyright ,
Copyright Applications ,
Copyright Office ,
Copyright Registration ,
FDA Approval ,
Intellectual Property Protection ,
Marijuana Related Businesses ,
Medical Marijuana ,
Medical Research ,
New Legislation ,
Patent Applications ,
Patent Registration ,
Patents ,
Pharmaceutical Patents ,
Photographs ,
The Copyright Act
In May 2020, we reported in an article published by Law360, “design patents outperform utility patents when it comes to injunctive relief.” The same is true when it comes to a rare form of injunctive relief—a general...more
Continuing the trend that we analyzed in May 2020, petitions to the US Patent and Trademark Office Patent Trial and Appeals Board (PTAB) requesting inter partes review or post-grant review for design patents maintained an...more
This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more
3/2/2022
/ Anticipation ,
Appeals ,
Article of Manufacture ,
Australia ,
Cease and Desist Orders ,
China ,
Design Patent ,
EU ,
Exclusion Orders ,
Final Written Decisions ,
Foreign Patent Applications ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Korea ,
Nexus ,
Nonobvious ,
Ornamental Design ,
Patent Applications ,
Patent Filings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Registration ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Precedential Opinion ,
Prior Art ,
Remand ,
Reversal ,
Section 102 ,
Section 103 ,
Section 337 ,
Substantial Evidence ,
Summary Judgment ,
The Hague System ,
USPTO ,
Utility Patents ,
Vacated
On January 14, 2022, Hermès International and Hermès of Paris, Inc. (“Hermès”) sued digital artist Mason Rothschild in the Southern District of New York for creating and selling “MetaBirkins,” a collection of NFTs tied to...more
Thank you for reading the February 2022 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss trademark rights in relation to appropriation art, including NFTs, and provide an update on cannabis...more
2/25/2022
/ Appropriation ,
Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Claim Construction ,
Dilution ,
Fair Use ,
First Amendment ,
Intellectual Property Protection ,
Non-Fungible Tokens (NFTs) ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Right To Appeal ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Unfair Competition
In a 6-3 decision, the US Supreme Court in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P. held that a copyright registration is valid even though it contains inaccurate information—as long as the copyright holder lacked...more
In conjunction with the forthcoming release of the firm's inaugural year-in-review report, speakers will offer case summaries and analysis of particularly significant design patent updates and trends. Specifically, the...more
2/23/2022
/ Design Patent ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Patent Applications ,
Patent Infringement ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patents ,
USPTO ,
Webinars
Earlier this month, the Supreme Court granted Unicolors' request for review of the Ninth Circuit’s decision in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P. (9th Circ. 2020). According to Unicolors, the Ninth Circuit’s...more
The June 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses recent litigation surrounding copyright registration invalidation and implications of the increase in trademark application filings at the USPTO....more
6/29/2021
/ Cannabis Products ,
Cannabis-Related Businesses (CRBs) ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Copyright Office ,
Copyright Registration ,
Evidence ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Intent to Defraud ,
Marijuana ,
Marijuana Related Businesses ,
Patents ,
The Copyright Act ,
Trademark Application ,
Trademark Registration ,
Trademarks ,
USPTO
The Second Circuit recently decided whether artist Andy Warhol’s series of silkscreen prints and pencil illustrations titled “Prince Series” was a fair use of photographer Lynn Goldsmith’s copyrighted photograph of musical...more
4/6/2021
/ Artists ,
Copyright ,
Copyright Infringement ,
Derivative Works ,
Fair Use ,
Intellectual Property Protection ,
Paintings Sculptures and Engravings ,
Photographs ,
Substantially Similar ,
The Copyright Act ,
Transformative Use
The March 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses fair use cases for photographs and three recent developments in the cannabis space. We also highlight recent accolades earned by Sterne Kessler's...more
4/5/2021
/ Artists ,
Cannabidiol (CBD) oil ,
Cannabis Products ,
Copyright ,
Copyright Infringement ,
Dietary Supplements ,
Fair Use ,
Food and Drug Administration (FDA) ,
Hemp ,
Hemp Related Businesses ,
Intellectual Property Protection ,
Jurisdiction ,
Marketing ,
Motion to Dismiss ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
Photographs ,
Proposed Legislation ,
Substantially Similar ,
Trademarks ,
Warning Letters
Product design holds tremendous monetary value globally. This often leads to successful designs falling victim to knock-offs that can damage brand loyalty and reduce revenue. Design patents, which protect the ornamental...more
Because copyright applications are not substantively examined, unlike patent and trademark applications, obtaining a copyright registration is typically viewed as relatively easy. Indeed, only a minority of copyright...more
The June 2020 issue of Sterne Kessler's MarkIt to Market® newsletter leads with breaking news of today's Supreme Court's decision in favor of Booking.com. Other topics discussed include copyright applications covering a...more
7/8/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Cannabidiol (CBD) oil ,
Copyright Applications ,
Coronavirus/COVID-19 ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
Lanham Act ,
Personal Protective Equipment ,
Prioritized Examination ,
Scams ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
Three years ago, the Supreme Court announced a seemingly simple separability test for determining whether features of a useful article are eligible for copyright protection in the landmark decision Star Athletica v. Varsity...more